A very handy new way to communicate with ISA/KR

If your PCT clients sometimes pick ISA/KR (the Korean Intellectual Property Office or KIPO), then you might like to learn about a very handy new way to communicate with ISA/KR.

The handy new way to communicate with ISA/KR is through ePCT, as I will describe.

The majority of PCT applications run their course without the applicant having to communicate with the ISA.  In most cases the ISA establishes the ISR/WO, communicates it to the applicant and to the IB, and that is the end of the involvement between the applicant and the ISA.

But every now and then the applicant will be in a position of needing to communicate with the ISA.  Examples include:

  • The applicant received an Invitation to pay additional fees and wants to pay the additional fees.
  • The application contains a sequence listing and the applicant did not provide a computer-readable sequence listing file.
  • The computer-readable sequence listing file filed with the application was defective.

For a US filer, the ISAs that get selected most often are ISA/EP, ISA/KR, and ISA/US.  If the US filer were to wish to communicate some document to ISA/US, this would of course be easy — you just e-file it in EFS-Web.  But if the ISA is not ISA/US, then the filer needs to figure out how to communicate the document to the ISA, because EFS-Web is not a good way to try to communicate it.

Over the years I have had many times that I had to scramble around to try to fax something to ISA/EP or to ISA/KR.  Or had to send a courier package to one of those Offices.  At least once it was very tempting to imagine getting on an airplane and hand-carrying the document to the Office involved.

But now in 2018 it is a losing game to try to fax things (see blog article), especially internationally.  If you fax something, and if you succeed, it is still not a good result because the document image quality will have been degraded by the faxing process.

I could try to learn how to use the e-filing system at KIPO or at EPO, but probably it’s not easy to figure out and if I am only going to do it three or four times per year, I will likely forget what I figured out and my login credentials might well have expired last week or last month.

So in the breath-of-fresh-air category we have a nice capability in ePCT, namely to send follow-on communications to an ISA.

Here are the main things to keep in mind.

First, if you want to use ePCT to send a follow-on communication to an ISA you need to have a WIPO user ID and password and you need to have two-factor authentication set up.  (I expect that most readers of this blog article already have this set up!)

Second, the PCT application of interest needs to be one that is in your ePCT workbench.  (Of course most readers of this blog article surely have every PCT application that they have ever filed available in their ePCT workbench!)

Third, as for this PCT application your rights would need to be eEditor or eOwner.  (In other words it would not suffice that you are a mere eViewer.)

Fourth, the ISA needs to be one for which this spiffy ePCT communications mechanism has been set up.  (Of the ISAs which RO/US filers can select, the ISAs for which this ePCT mechanism works are ISA/AU, ISA/EP, IS/RU, ISA/SG, and now ISA/KR.)  Of course it would be most helpful if other ISAs were to join this system, and I hope that they will.

There are other kinds of Offices for which the filer can use ePCT to communicate with the Office.  For example if you wish to file a Demand, you can use ePCT to file the Demand.  The IB will date-stamp the Demand and the IPEA will honor the IB’s date stamp.

There are other kinds of Offices for which ePCT can be used for communications (for example some ROs) but for most US filers, the ROs would not be of much interest as a place to send communications.

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So now returning to the very convenient way to use ePCT to communicate a document to an ISA.  You log in to ePCT with strong authentication.  You find the PCT application of interest in your workbench.  You click on “documents”.  You then click on “upload”.  You then pick a “recipient” in this case “ISA”.  Now the ePCT screen will tell you what time it is now in Korea.  (As you can see, at this moment in Korea it is 11:40 PM on Monday, September 3.)  This means that if I e-file something right now in ePCT in this case, directed to ISA/KR, it will get credit for being filed on September 3.

The screen also says how the IB will communicate the document to ISA/KR.  It turns out there are several different ways that the IB might communicate a document to an Office, depending upon the particular Office and depending upon the role of the Office (ISA?  RO?  IPEA?) with respect to the document.  In this case (the Office is KIPO and the role is ISA) the communication is by means of EDI in a once-a-day batch communication.  The point here is that it might take as long as 24 hours for the document to actually reach ISA/KR.

You will recall I mentioned that in the particular case of filing a Demand, you get credit for the time that the IB date-stamped the Demand (even if it is already the next day at the IPEA).  This is because so far as Demands are concerned, PCT Rule 59.3(e) obligates the IPEA to honor the date stamped by the IB.

In contrast, for communication through ePCT of things that are not Demands, Rule 59.3(e) does not apply.  Instead, the policy for this particular type of communication is that the IB will date-stamp the document based upon what time it is at the destination Office.  And the Office will honor that date stamp.  So in this case if I were to e-file something right now in ISA/KR, the IB would date-stamp it for September 3.

Then, no matter how long it takes for the EDI communication to actually go through, for example even if the once-every-24-hours batch were to arrive in Korea on September 4, the ISA/KR will honor the September 3 receipt date.  (In this case since the time in Korea is only twenty minutes from midnight, the batch would almost surely not arrive until September 4, yet I would still get the September 3 receipt date.)

Let’s compare legacy ways of sending documents to ISA/KR.  We could fax a document.  We could attempt to e-file it.  We could hand-carry it or send it by post or courier.  Each of these approaches has drawbacks.  Faxes don’t work well in 2018.  If the fax does work, it degrades the image quality of the document.

Not only that, if you use a legacy approach to send something to ISA/KR, you rely upon a human being at ISA/KR to figure out which particular application file it belongs in, to insert the document in to the correct file.  And you rely upon a human being at ISA/KR to figure out which particular workflow should receive the document, and to insert the document in to the correct workflow.

In contrast, for an upload to ISA/KR through ePCT, the filer indicates the application number and the filer indicates the document type.  Both pieces of information get communicated to the ISA/KR in an electronic way (as metadata) along with the document itself.  Now I don’t know exactly what happens at ISA/KR but I would not be at all surprised if ISA/KR made use of such metadata to determine the particular file into which the document gets inserted, and to determine the particular workflow into which the document gets inserted, all in an automatic way.

You might wonder if there is a place that you can look to find out, for a particular Office, what exactly you can or cannot communicate to that Office through ePCT.  I am delighted to say that there is such a place, and it is in ePCT.  You will notice that when you click on your own name in ePCT you will encounter a drop-down menu that includes “Office Profiles” which is where to find this information.

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Then you can pick an Office of interest (for example KR) and it will provide a wealth of information about that Office.  For purposes of this blog article (communicating with ISA/KR through ePCT) the most interesting piece of “Office Profiles” information is the “processing settings” as shown here.  It says that “as International Searching Authority” the capability is “applicants can upload subsequently filed documents.”

This is what tells you that you can send follow-on filings to ISA/KR through ePCT.

(Earlier I mentioned that there was a category of communication which you can send to IPEA/KR by means of ePCT, namely you can prepare a Demand as an “action” and it will reach IPEA/KR under cover of Form PCT/IB/368.  It is not, however, presently possible to send follow-on documents to IPEA/KR by means of ePCT.)

As you can see I am excited about this new capability — using ePCT to send follow-on documents to ISA/KR.  I hope that readers have already been using ePCT to send follow-on documents to the ISAs listed above, and will start making use of this capability with ISA/KR.  I hope you will post a comment below with your experience using this capability.

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